852
FEDEHAL REPOR'£ER,
vol. 51.
CITY OF CARLSBAD
et ale v.
TIBBETTS
et al.,
(Cwcuit Court, D. Massachusetts. August 16, 1892··1 1. EQUITY PLEAI>ING-ALLEGATlONS Oll' CITIZENSHiP-PRAYER lI'OR PROCESS.
A bill may be dismissed by the court, on its own motion, where the proper allegations as to citizenship of the parties are not contained in the Introductory part, aud are not pointed out by counsel elsewhere in the bill, or where the prayer for snbpcena does not contain the names of the defendants, as required by the rules.
2.
TRADll:-MARKS-INlI'RINGEMENT-DEOEPTIVE REPRESENTATIONS.
Independently of any right of complainants to the exclusive use, as a trade-mark, of the name applied by them to their product, the sale by defendants of, a deleterious'substance, represented by the latter to De in part or in whole the same substance in which com plainants are dealing, aud of which they are the sole nroducers, al1dwhich is admittedl;r of It beneficial character, will be restrained.
In ,Equity. Bill by the city of Carlsbad and others against S. Tibbettsaud others for infringement of trade-marks. He,ard on demurrer to amended bill. Demurrer overruled. Theintroductory part of t,he bill, as originally filed, was as follows:
"To th'e Honorable the JUdges of the Said Cotwt: The city of Carlsbad, a municipality of Bohemia, in the empire of Austria, JUlius Schottlander. and ven, Elizaothers, to wit" Bruno :::lch6ttlimder, i:3aloSchottlander, Augusta beth Oliven, D<:>rathea Cohn, Pacully, MalvineKorn,Paullt Heymann, descendants and" heirs of Laebel Schottlander, deceased, trading as Loebel Schottlandel,', citizens of the empire of Austri&, doing business in the city ofCarlshad, the said city of Carlsbad and Loebel Schottlander acting herein by their in fact and agents, the Eisner & Mendelson Company, of the city of Philadelphia and state of Pennsylvania, in the said United States of America, and the said Eisner & Mendelson Company, a corporation duly organized under the laws of the state of :Pellnsylvania, doing and i,n the city of New York, exclusive business in the city licensees for the United States. of America for the Carlsbad water and the Cadsbad Sprud'elSa12;, complainants. bring this their bill of complaint against the said S. Tibbetts and W. W. Lacey, trading as S. Tibbetts & Co., S. Tibbetts, George Burwell, and W. W. Lacey, residents of said district of Massachusetts, and dOing business in the city of Boston, defendants, and thereupon your orators cornplain,and say." The bill contained allegations showing the acquisition by the city of Carlsbad of exclusive, prOpl'ietal'yrights to the mineral springs at said city, and to the waters thereof, ,and the crystalline salts produced by e,"aporation of the water of the Sprudel spring, and also to the use of the name "CarlaliJad,"as applied to the water, and salts; the acquisition by the firm of Loebel Schottlander" of the exclusive right and license of. hotling and exporting t{1e water, and of exporting the Carlsbad Sprudel Salz, as manufactured and put up by the city of Carlsbad; the adoption for said salts of the distinctive name "Carlsbad Sprudel Salz," and its use upon the distinctive bottles, labels, and wrappers in which the salts were sold; that the salts had become well known under the dIstinctive name of "Carlsbad Salz," or "Carlsbad Sprudel Salz," and said trade-
CITY OF CARLSRAD
v.
TIBBET'l'8.
853
marks, labels, and designations had come to be regarded as denoting the origin thereof, and as the product of said mineral springsj and that the Eisner & Mendelson Company had become the exclusive licensees and sole agents, under the said Loehel Schottlander, for the sale of the Carlsbad Sprudel Salz in the United States, and were fully authorized to commence actions at law or other proceedings in the name of the firm of Loebel Schottlander, and in the name of the city of Carlsbad. The bill continued: "Your orators further show that, since the adoption by the city of Carlsbad, and the said Loebel Schottlander, of the trade-marks hereinbefore more particularly mentioned and described, the said city of Carlsbad, Loebel Schottlander, and said complainants' firm, proceeded, at the expenditure of much time, labor, and money, to push the sale of the said Carlsbad Sprudel Salz, so made, put up, and labeled by him and your orators aforesaid, and have thereby mad!' extensive sales thereof in the markets of Europe and elsewhere; wherefore he and they, as well as your orators, the Eisnf1r & Mt'ndelson Company, are seriously injured and deprived of the profits which they would otherwise realize by reason of any other spurious or artifiCIal salts being put up and sold under the name of · Carlsbad,' thereby indicating such spurions and artificial articles as being the genuine product of the Carlsbad springs, or as manufactured by or at the city of Carlshad, which is not only a fraud upon the rights of your orators, but a deception npon the community. Your orators further show unto your honors that, notWithstanding the long and qUiet use and enjoymen t of the excl usi ve right to the name of ·Carlsbad,' as applied to any proprietary article or to the sale of the product of the said Carlsbad spring, and the long and quiet use and enjoyment of the said exclusive trade-marks of the words' Carlsbad Sprndel Salz,' · Carlsbad Salz,' · Carlsbad,' or · Carlsbader Salz,' or ' Karlsbader,' the said defendants S. Tibbetts and W. W. Lacey, trading as S. Tibbetts & Co., S. Tibbetts, George Burwell, and W. W. Lacey, well knowing the premises and Willfully disregarding the rights of your orators, and contriving to injure your orators, and to deprive them of the great benefits and advantages which might and otherwise would accrue unto your orators from the exclusive sale of the products of the said springs, and the sole use of the trade-marks aforesaid used by your orators to distinguish the said goods as genUine, have recently. before the commencement of this suit, as your orators are informed and believe, without the license, consent, or knowledge of your orators, and against their will, and in violation of their rights aforesaid. and with the intention of defrauding your oratol'sand deceiVing the public, the community, and the trade, wrongfully and fraudUlently sold and offered for sale, are now selling and offering for sale, and threaten to continue still to sell and offer fol' sale, in the city of Boston and elsewhere, a spurious and artificial article, designating the same as · Carlsbad Obesity Pills,' indicating by the words, 'Prepared only by the Carlsbad Obesity Pill Company, Carlsbad,' that the same are manufactured and prepared by the Carlsbad Obesity Pill Company of Carlsbad; and furthermore translating the words aforesaid into German, and thereby usiug the word · Karlsbader' in the same manner in which the said word is used by the city of Carlsbad in the translation of the word into German, in the sale of the proprietary article prepared by the said city. Your orators further aver that there is no such company, firm, or partnership at the city of Carlsbad as the Carlsbad Obesity Pill Company, but that the said company is composed of and comprises the defendants above named, who reside and do business in the citv of Boston, at 176 Boylston street, under the name and firm of S. Tihbptts &, Co. Your .orators further aver, on information and belief, that ::i. TilJ;;elts is tlle agent
854
FEDERAL REPORTER I
vol. 5L
this MIl as an e;lli1;llt is filed.lm achlal sample of the article. sold. by defendants as above set forth, marked "Exhibit A," with the words'written upon the outside or box in ink, "Bought by P. E. T., June 24, 1891."
by, Gporge <1,ruggillt, at 176 :aoyl!!ton !jtreet, Boston, one W. W. Lacey with the said Tibbettlr, and is, to a great the movinl{ spiriti'n tile manufacture and preparation of thecc.>mmbdity .Indicated as 'Carlsbad Obesity Pills, '"
ot,
"Your oratOl's further complain and aver that accompanying the sale of the said Carillbl\d Obesity Pills, and publisheu extt'nsively hy distribution and through t.he /llaUs. is a pamphlet enlitleu on its front outer cover, 'How to Get Thin,' as will more fully appeal' by l'eference to a copy then:of tiled herewith, aud which It is prayed lUay be taken liS part, of this bill of cornpI.lint. the Sluoe heing mal'kpd 'ExhiLit B.' On the back outer cover of the saId plImphlet isa description IIf the city of Carlsbad, in Hola'mia, and of the cunstituent t'lementsof the of the saiu city. On 10 of t.l3id pamphlet, commencing at the sevenlh line·from the LoUom tlf said page, the said defendants Ulle the following langnage alld represen.ation: 'They [meaning the Carlsbad Obesity l'ilIl1] arl" composed of the salts of the celebrated Carlsbad spl'jngs, rich in. sulphate of sudium, so h,ended with vel!etahle extracts as to I'ender. th"'lJl the mllst effecti ve obesit,v pills otl'el'ell to the public,' 'fhe said pamphlet furthermore contains a pictorial representlllilln of the' Sprudl'l Boiliug l:lprings 'at Carlslmd. Your orators fl1l'ther aver that the said "ills are of the salts of the Carltluad springs, bllt that, lin the contrary, they COIIIII$t mainly of aloes, which is a drllg very deletenolls to health if used fol' any length of time. Your ol'lItors further aver that there is no sllch cOlllpau,v as the 'Carlsbllcl Obesit,v Pill Compan.r,' at Carlsbad, having the right to the use of thenarnl' of 'Carlsbad' liS that the saitl pills are IlIanllfaclure.1 in or lttCarlshad, containing any of the constituent elements of the gl'nuiue product of the Cal'lsball spring; but, on the contrary, your oilltors Itvel' on inlol'mation and belief that tIle aaiu pills al'e luanut'actured in the United States of America. most prolmlJly 1u the city of Boston, by the said TilJlJetts, Burwl'll, nn,1 Lacey, 01' eHhel' One or 1111 of them combilled. wilhthe express illit'ntwn of sellmg the slime unuer the name of 'CarJslllld.' not onl>' with the purpose ot' injuring and defrlludillg your oratorll of lhei!' jlllltrights, but with the intl'nliull of deceiving the community into pUI'clmsing the llaiel pills un,[er the lluppositiun that they are mdnufachu'ed at or In the city IIf CaJ1:lbad, of some or all of the cOllstituent elemeuts 01' COulpollt'nt parts of the pWduct of the Carlsb,ld that in furthe.'allce 01 this scheme the same Ht' cllnllignedto S. Tibbetts & Co., as sale agt'uts fur the Uuited ::;t.\tes and Canllda. Your oral ai's f ll1ther aver that the llai,1 defendanls, in furthtmmce of ,the scheme aflH'esaid. have a printed "ard, in colllrs, wherl-011 the said pillsl\l'l" called' Carbball Pills,' with the name' Uarlsbl1d Ubesity PilIs.Uarlsball. 'which )'our oratllrs aver is calclllatt'u to d· ceive the puuJic intll the suppusi:tion that the said pills are ,manufactured under or cilY uf Carll1had. OI':IJ.V the city of Carlsbad. YUUI' orators a\'er that the slime are manUfllctured in the Unitl"d Slales of America. Whidl said acts anddllings on lhe, part ol"said defendllnts have not only heen lind calculated anil manifelltly designell to defl'audyour Ol'lItOI'S, and have greatly injured thl'lII in their trade an!t,busiuess in the United States of America, but areman,feslly calculated llhiJdt'lii/{ned to deceive the pllhlic, the trade, and th6 cuinmllnity, and creale cunfu"ion in lhe minds of PIlI'chllSel's. and mislead and decdvtl the puulic, espedally thllse familiar with and prt'farring the gen· Ulne pl'uducts lit' the Carlsl,ad l\prinj{. Your oratol's further say that they clmnot. with certainty, state .the exact mllgnituLie of tuelr loss and injurr
CITY, OJ' CARLSBAD t1. TIBBET'l'I.
855
suffered by reason of the said wrongful acts of the defendants,. but believe the l1181De will exceed the 8um of $10,000. " The bill further alleged the bringing of other suits in the circuit oourts of the United States against other persons to prevent unlawful interference with said proprietary rights of complainants, in which injunctions against the defendants therein had been granted; and, after praying a discovery, an injunction, and an accounting, the bill concluded with the following prayer for process: "May it please your bonor to grant unto your orators a wrn of subpcena of the United l::itates of America. directed to tbe said defendants, commanding them, by the proper otliceri, to appt,:\\" and answer this bill of complaint. and to abide and perform such order and decree in the prl'misE!8 lLS to thp court shall seem meet, and be required by the princi!,lea of equit,)' lin!! good conlCience." Defendants demurred to the bilL Jerome Carty, for complainants. Stephetl H. Tyng, for defendants. PUTNAM, Circuit Judge. The following are noted by tne MUTt on its own motion: The bill in this case contains no proper prayer lor subprena, as required by the rules of the supreme court. Moreover, th"re are no proper allegations as to citizenship in that portion of the bill where they are customarily and properly inserted. If they appear elsewhere, the court cannot be expected to search for them, and it is for counsel to point them out. If they do not appear, the bill i9 detective on this account, as well as for the other reagon already stated. It ill therefore ordered: Bill dismissed at the AUl(ust rules, 1892, with costs, as of course, and without further order on the part of the court, unless costs to before that time complainants properly amend and pay that time. . Thereafter complainants amended the bill by inserting in the introductory pa,rt thereof, after the description of certain of the complainants 88 citizens of Bohemia, in the empire of Austria, the words, "and subjects of the emperor of Austria," and, after the description of the Eisner & Mendelson Company asa corporation duly organized under the laws of the state of Pennsylvania, the words, "and a citizen of said state of Pennsylvania," and after the word "defendants," the words, "and citizens of said state of Massachusetts," and also by changing the prayer for process therein 80 as to read as follows: .. May it please your honor to grant unto your orators a writ of subpcenB of the United States of America. directed to the said defendants S. Tibbetts and w. W. Lacey. trading as S. 'fibbetts & Co.· and S. Tibbetts, George Burwell, and W. W. Lacey, commanding them. and each of tbem, to appear and anIwer this bill of complaint, and to abide and perform such order and decree in the premises as to the court shall seem meet, and be reqUired bl the principles of eqUity and good conscience." Defendants also demurred to the amended bill.
I'EDERAL REPORTER,
PUTNAM,Circuit Judge. As this case Comes before me on general deif the bill is sustainable on any ground, the demurrer must be overruled. The oomplainants cite nothing binding this court proin the exclusive use Of the word "Carlsbad." The case which most nearly approaches the contention of the complainants on this point is found originally as Thomp80n v. Montgomery, 41 Ch. Div. 35, (decided by the court of appeal in 1888,) and affirmed by the house of lords in [1891.] App. Cas. 217. This case is noted in Lawrence Manuj'g 0>. v. Tenne88e8 Manufg 0>;, 138 U. S. 537, 11 Sup. Ct. Rep. 396; where it seems tobEi regarded as an authority only to the extentthat tM ,party restrained was using the naJl1.e of the town Of Stone in such wa,38l!ltO amount to a false that his goods were the goods of the complainant. In Brewing A88ociation v. Piza, 24 Fed. Rep. 149, and in White Lead 0>. v. Cary, 25 Rep. 125, the court protected the name of the city which was the residence of the original manufacturer, and which he had attached to his trade-marks; but in New York & R. Cement Co. v. Oopw,y Cement Co., 45 Fed. Rep. 212, Mr. Justice laid down.. the rule that the. name of a town or cittIs'onein which no"person eim obtain an exclusive right; and he illustration by citfng the word "Havana" as attached to that, ita in New York sells "Hsvana " cigars which in trutnare not such, it. may be fraud, but it can be noviolstion of a tradematK":;'lil this case he affihns his own 'decision in New York & R. Cement Co. Co., 44 Fed. Rep. 277, concurred in by Circuit Judge concerning the use of the' name of the town or village of RosendAle. " I that the rulelaid down by Justice BRADLEY may be held to be the1a.w in the UnitedStates; although to one who knows the history of the manufacture of Rosendale cement, it would seem just, on a bill filed by any cement manufacturer in that locality, in behalf of himself and other manufacturers, to protect. against an injury to the honest dealer. coupled with a fraud on the public, '. The fact that many ought not to deprive have a CommQn interest in the same one of the many from being protectedsp;ainst an injury to the whole; and, whatever difficulties there might be in a suit at law for damages in behalf of ,one manufacturer among many, as pointed out by Justice BRADLll:Y, there is no more inconvenience in proceeding in equity in such cases on bips in behalf of parishioners to establish a general modus, or of Commoners respecting. rights of common, or of one taxjtl .behqlf of all others in the town, aU of which are well-recog-nized subjects of equity jurisdiction. It may be, as the complainants assert,that this case can be distinguished on the alleged ground that the right of the complainants to use the name of the city of Carlsbad, in connection 'With products of its springs, is exclusive. It is certain that,incase'of the "Stone Ale" referred to, and also in the case of the "Glenfield Starch," reported as. Wotherspoon v. Currie, L. R. 5 H. L. 508, and noted in Lawrence Manufg CO. Y. Tennessee Manufg 00., 138 U. S. 550, 11 Sup. Ct. Rep. 401, the use of the name of the town waa protected, under special circumstances.
fear
CITY OJ' CARLSBAD fl. TIBBE'rl'I.
857
On the other hand, it may well be questioned whether, if the respondents in this case should use the word II Carlsbad" in such manner as to be free from all representation, or that they were offering for sale the products of complainants' springs, or in connection with only the words "Obesity Pills," any injury to the complainants could be shown,or any right of theirs violated. As, however, this bill must be sustained on general demurrer, I do not now find it necessary to pass upon the broad right to the use of the word" Carlsbad" claimed by complainants. Moreover, that matter can be better determined on a presentation of all the facts at a final hearing. This bill must be sustained on the allegation that the respondents make public use of the following representation: II They [meaning the Carlsbad Obesity Pills] are composed of the salts of the celebrated Carlsbad springs." This the bill alleges to be false. The bill furtber alleges that respondents' pills are composed mainly of aloes, a drug alleged to be very deleterious to health, if used for any length of time. On this point the case is narrowed down very closely. It is that the respondents are falsely and injuriously selling a deleterious substance, and are representing it to be in part or in whole the same substance, admittedly of a beneficial character, in which the complainants are dealing. and of which they are the sole producers. That a direct attack like this on the trade of a manufacturer or other dealer will be restrained is an,elementary proposition. It is not necessarily a branch of the law of trademarks, but underlies and supports it. While the courts in this country have not generally accepted the rules of the English courts restraining libels directed against a man's trade or business, on the ground that those rules rest on the judicature acts, yet they will enjoin and punish untrue representations expressly made by one person, that he is selling the product of anotherjand, even when such l'epresentations are not fraudulent, they will protect against them, as they will against any unauthorized intl'Usion on other property rights. It is sufficient that the court is satisfied that there is an intent on the part of the respondents to palm off their goods as the goods of the complainants, and that they persist in so doing after being requested to desist. McLean v. Fleming, 96 U. S. 245,254. But positive proof of fraudulent intent is not required where the proof of infringement is clear. Id. 253. This principle, 80 far 88 it applies independently of the special branch of law relating to trade-marks, supports a class of cases where the use of a man's own surname is restrained, and also the results in Thompson v. Montgomery, ubi WUp',.a., and La v. Haley, L. R. 5 Oh. App. 155. It is fully recognized in Nail Co. T. Bennett, 43 Fed. Rep. 800, and in Lawrence Manufg ea. v. 2'enwo88M Manuj'g Co., ubi 8'Upra, and is somewhat explained in Browne on Trade-Marks, § 43. Demurrer overruled, and respondents ordered to plead or answer on or befor8 October rules next; costs to abide the final decree.
1.'\
,I,wli.j(:c;"·:I '.'" hns¥IJVANtA R.,C6. '., r ,
'11. NATtON:AJ.. DOCKS
&
C. R'Y. Co.
I,
B.
The decisionaf the htg;hest court in the state of New Jlerseyas to the right of one railroadoompany to cross the landllof allother railroad .cqmpany in the same state is cQncJusivef "-9d CllnnQt be reviewed by the United circuit court in a suit the sailie' partielil. invoivingthe lIame subject-matter,though a federal question be Involved..: . ", SAME-INJUNCTION-DISMISSAL OP BU,L-F'R:lCTIOE.
oP RoAD-RES JU:\>ICATA.
.
A motion to dillmiss a bill for, an injunction filed by the' proprietor company will not, however. be:grantll4; though the:lnjnnction be refused·.since the bill may be ,avaUable tocompillinantto the, mutual use of the premises by the parties. ,
",'
. . ".';. 'I',': ,;.1',;
by the pennsylvania Railroad Company against Jersey Junp!ion ConneotiIlg Railway Company frqW prosecuti,ngpertain condemnation proceedings. motion a prelil:niIlllty injunctioIl,wasdenied j also defendant's motion to qi13w-\ssthe bill; IUld the.cause was retained to regulate the muhml \Jse ,ofthl'lpremises. '. ,;, B. Vredenburgh,$amtul H. Grey, and Joseph D. Bedle, for com.plainant., . .... ' DWkin8O'f/. & Thomp8011.j ,Gilbert Oolli'TU11 and John R. Emerg, for defend-
In Equity.: National to restrain
ant.
AOHF..80N, Circuit Judge. The court is a5ked by a preliminary injunction to restrain the defendant company from further prosecuting certain condenmation proceedinp;s instituted .by it under the general railroad law' ofthe state of Ne\VJersey, and from taking thereunder, or other· 'wise, '8ny' propertyorlanns'of the complainant, or constructing upon said 'property and lands its proposed railroad. On the other hand, the de'fendant n10veS the court to dismiss the .bill. I have examined the whole 'calle with the care which its, importance dtlmands, but I do not deem it lleeessary at this time to express an opinion upon all the questions which 'the 'Mansel regard as here involved, and which they have argued so ably. 'I"ehallconsider the case in a single aspect only. In the state of New Jl3H!ey it is authoritatively settled that the supre.ne court, on certiorari 'p10secbted .by the landowner, bringing up the appointment of commisliiohel'll in condemnu Uon· has the right, by virtue· of its gen,era} supervisory jurisdiction over all inferior tribunals proceeding in a summary way, to inquire into and determine all questions, whether of -fact or law, which atJect'theright of the company seeking the condemnationto take the plaintiff's land. MorriB &: E. R. Co. v. Hudson Tunnel , R.Ca., 88 N. J.Law, 548. Now, long before our equitable jurisdichere invoked, ,the''ComplainantproQured the allowance of a writ of certiorari, where.by the condemnation proceedings in question were removed into the supreme court of New JerseYi and thereupon reasons were filed in thA,t court by the complainant for setting aside tbe said proceedings and the order appointing the commisE'5a!lers, which raised every